creating meaning within a gray area: redefining …...creating meaning within a gray area:...

* B.B.A., Stetson University, 1990; M.A., University of South Florida, 1992; J.D.,Stetson University College of Law, expected July 1997; Articles and Symposia Editor,Stetson Law Review.

This Note is dedicated to my parents, whose encouragement, guidance, and sup-port have sustained me in all that I do. I would like to thank Kimberly Johnson, LauraBowers, Judith Cordista, Craig Huffman, Beth Curnow, and Paul Tranford for their sup-port and understanding throughout this project. I would like to thank Professor DarrylC. Wilson for his guidance and insight. Additionally, I extend a special thanks to JoleeLand for her invaluable assistance with this Note.

1. See 15 U.S.C. §§ 1051–1127 (1994). See generally Susan Somers Neal & ColleenConnors Butler, It's Time to End Discrimination Against Trademarks of Color, FED. CIR-CUIT B.J., Spring 1995, at 71.

2. See, e.g., In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985).3. If the color serves a utilitarian purpose which competitors will need to use to

compete effectively, then the use of the color will be seen as a functional item unable tobe trademarked. See David M. Kelly, `Qualitex' Makes Visible the Strategic Spectrum,NAT'L L.J., May 8, 1995, at C10.

4. For example, in Owens-Corning, the Federal Circuit held that the color pink asan ornamental aspect of the fiberglass had no functional purpose and was a distinctive

NOTE

CREATING MEANING WITHIN A GRAY AREA:REDEFINING LIKELIHOOD OF CONFUSION INLIBMAN CO. v. VINING INDUSTRIES, INC.

Lee Ann Tranford*

The trademarking of a product's color is the latest adaptation ofthe ever-evolving Lanham Trade-Mark Act.1 Companies use a dis-tinctive color or colors to set their product apart from others, forexample, coloring fiberglass pink.2 By using a distinctive color whichconsumers would not normally associate with that product, compa-nies ensure that their product will stand apart from others, thuscreating a distinctive identity for the product.3 Therefore, this prod-uct distinction allows consumers to identify the item from manyother goods available.4 However, when a competing company mar-

902 Stetson Law Review [Vol. XXVI

aspect of the trademark. See Owens-Corning, 774 F.2d at 1122–24; see also Paul R.Morico, Protecting Color Per Se in the Wake of Qualitex v. Jacobson, 77 J. PAT. [&TRADEMARK] OFF. SOC'Y 571, 580 (1995).

5. See also Michael J. Allen, The Role of Actual Confusion Evidence in FederalTrademark Infringement Litigation, 16 CAMPBELL L. REV. 19, 19 n.2–3 (1994).

6. 69 F.3d 1360 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996).7. Libman is a nation wide manufacturer of brooms, mops, and brushes. See

Libman Co. v. Vining Indus., Inc., 876 F. Supp. 185, 186 (C.D. Ill. 1995), rev'd, 69 F.3d1360 (7th Cir. 1995).

8. See id. at 187. Libman first produced the broom with the off-centered handle,called the 201 broom, in 1990. See id. Libman filed the trademark in March 1990 andfirst used the broom in commerce on April 30, 1990. See id. at 186. The broom's handleintersects with the block top at a 30 to 45 degree angle. The broom was created for useon a variety of sweeping surfaces in many types of locations. See Patent Application No.441,478 (on file with Stetson Law Review).

9. See Libman, 876 F. Supp. at 187. For the first contrasting-color brooms, thecolor red was used for the vertical band. See id. The brooms with the green contrasting-color bands were placed into commerce one year later in 1991. See id.

10. See Libman, 69 F.3d at 1361.11. See Libman, 876 F. Supp. at 186. The Libman trademark registration did not

specify the color to be used within the patent, except that there were to be contrastingcolors. See Libman, 69 F.3d at 1361.

12. See Libman, 876 F. Supp. at 187.

kets a suspiciously similar, or nearly identical, color within a trade-mark, confusion can result for the consumer.5 The resulting likeli-hood of confusion created by the similar use of color in a householditem is the basis for the case of Libman Co. v. Vining Industries,Inc.6

I. FACTUAL AND PROCEDURAL DEVELOPMENT OF LIBMANCO. v. VINING INDUSTRIES, INC.

In 1990, the Libman Company7 created a broom with a con-trasting-color bristle pattern and an off-centered handle called theLibman 201 model.8 Libman used a vertical color band on bristles ofthe broom; this band contrasted with different colors used for theremaining bristles.9 Libman used the colors red, green, or black asthe band color with the rest of the bristles being dark gray (for red)or light gray (for green or black).10

Libman filed for federal trademark registration on March 12,1990 and first marketed this off-centered, contrasting-color broom inApril 1990.11 These brooms were marketed nationally in retail storessuch as K-mart and Wal-mart and supermarkets like Giant Foods.12

Libman originally targeted consumers through magazines such as

1997] Likelihood of Confusion 903

13. See id.14. See id. Libman sales ran from $550,797 (182,388 units sold) in 1990, to

$3,117,334 (1,060,740 units sold) by November 22, 1994. See id.15. See Libman, 69 F.3d at 1360.16. See Libman, 876 F. Supp. at 186. At trial, the defendant, Vining Industries,

claimed that the Libman mark was invalid because in 1989 Kaminstein Imports, Inc.marketed an Italian yellow and black bristled broom in the United States. See id. at187. The defendant claimed that it had a licensing agreement with Kaminstein Importsto market the brooms. See id. However, during the trial, Vining dropped its counterclaimbased on this assertion. See id. Therefore, the defendant did not raise this issue on ap-peal. See Libman, 69 F.3d at 1361.

17. See id.18. See id.19. See id.20. O'Cedar is a national competitor of Libman. See Libman, 876 F. Supp. at 187.21. See id. Vining Industries actually purchased the O'Cedar line of mops and

brooms from The Drackett Company in September 1993. See id. Vining continued theO'Cedar 2000 line and never disputed responsibility for sale of the brooms. See id.

22. See id. Vining later produced the Professional Products Extra Wide Broom,which Libman also claimed violated its registered trademark. See id.

23. See id. at 188 n.1.24. See Libman, 876 F. Supp. at 188.

Family Circle, Good Housekeeping, McCall's, and Women's Day, butthe company also used television advertising to promote the Libman201.13 Each year since the broom's inception, sales for these con-trasting-color brooms escalated.14

Libman was twice denied trademark registration on its con-trasting-color broom.15 However, trademark protection was finallygranted with the registration of the mark on April 6, 1993.16 Libmanhas continuously protected its trademark for the off-center, contrast-ing-color broom and filed a trademark infringement suit againstRubbermaid when Rubbermaid produced a color-banded broom.17

This suit was later dismissed when Rubbermaid withdrew the prod-uct from the market.18 Libman also protested when KaminsteinImports imported an Italian broom with color stripes on the bristles,but it has yet to file an infringement action.19

In January 1992, Vining Industries introduced a line ofO'Cedar20 products called the O'Cedar 2000.21 These brooms have aband of dark gray bristles on one end of the broom which is con-trasted with lighter gray bristles.22 Vining introduced the 2000 lineat a time when the Libman 201's sales had risen dramatically from182,000 to 728,000 a year.23 Libman discovered the existence of theO'Cedar 2000 in April 1993.24 At that time, Libman's president pro-


25. See id.; see also supra note 21.26. See Libman, 876 F. Supp. at 188.27. See id. at 185, 186.28. See id. at 188 (applying the enumerated factors that prove Vining's patent in-

fringement); see also McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1166(7th Cir. 1986).

29. See Libman, 876 F. Supp. at 188. Consumers would occasionally call on thetelephone to find out where they could find the Libman 201 broom that they saw adver-tised. See id.

30. See id. Libman did not conduct a market study to show that an actual likeli-hood of confusion exists. See id. Actual confusion is just one of the market factors in-volved in determining if trademark infringement exists. The Restatement (Third) of Un-fair Competition defines the market factors as

(a) the degree of similarity between the respective designations, including acomparison of

(i) the overall impression created by the designations as they areused in marketing the respective goods or services or in identifying

tested the use of the contrasting-color broom to the Chief ExecutiveOfficer of the O'Cedar division of the Drackett Product Company.25

However, Drackett continued producing the O'Cedar 2000, andLibman sued for trademark infringement and to enjoin production ofthe line.26

Libman attempted to enforce its rights against Vining Indus-tries through the trademark regulation power of the Lanham Trade-Mark Act; the case was filed in the United States District Court forthe Central District of Illinois.27 Libman needed to show that a like-lihood of confusion existed in order to support the trademark in-fringement claim; to prove a likelihood of confusion, Libman neededto establish that the following elements existed when comparing theO'Cedar 2000 with the Libman 201:

(1) similarity of marks;(2) similarity of the product;(3) area and manner of concurrent advertising and use;(4) degree of care likely to be exercised by consumer;(5) strength of plaintiff's mark;(6) actual confusion; and(7) intent of the infringer to palm off its products asthose of another.28

At trial, Libman presented evidence that showed consumers didrecognize the Libman mark.29 However, Libman did not demonstrateproof of actual consumer confusion among the consumers targeted inthe market.30 Libman's president justified this lack of evidence by


the respective businesses;(ii) the pronunciation of the designations;(iii) the translation of any foreign words contained in the designa-

tions;(iv) the verbal translation of any pictures, illustrations, or designs

contained in the designation;(v) the suggestions, connotations, or meanings of the designations;

(b) the degree of similarity in the marketing methods and channels of distribu-tion used for the respective goods or services;(c) the characteristics of the prospective purchasers of the goods or services andthe degree of care they are likely to exercise in making purchasing decisions;(d) the degree of distinctiveness of the other's designation;(e) when the goods, services, or business of the actor differ in kind from thoseof the other, the likelihood that the actor's prospective purchasers would expecta person in the position of the other to expand its marketing or sponsorshipinto the product, service, or business market of the actor;(f) when the actor and the other sell their goods or services or carry on theirbusinesses in different geographic markets, the extent to which the other'sdesignation is identified with the other in the geographic market of theactor.

RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 (1995).31. See Libman, 876 F. Supp. at 188.32. See id.33. See id. at 189.34. See id. This decision occurred before the Qualitex Co. v. Jacobson Products Co.

decision in which the Supreme Court held that color can be independently recognizedunder the Lanham Trade-Mark Act as an identifiable mark. See Qualitex Co. v. JacobsonProds. Co., 115 S. Ct. 1300, 1303–04 (1995).


arguing that consumers were not likely to complain of actual confu-sion since the broom is a low-cost item.31 Therefore, the court usedcomparisons between the two companies' brooms to determine if thetrademark was infringed upon. The trial court used the seven-factortest noted above to examine the existence of a likelihood of confusionand to determine if trademark infringement occurred.32 The courtfound that the two product lines had similar product design, tar-geted the same purchasers, and used the same sale outlets. Theproducts are also advertised through the same media. The court,therefore, determined that the O'Cedar 2000 broom did create alikelihood of confusion with the Libman 201 broom.33

However, Vining Industries argued that since the Libman markwas dependent on color alone, it could not be recognized as a trade-mark.34 Despite this argument, the court held the distinctive bandsof color on the Libman 201 broom's bristles created a unique featurethat warranted trademark protection.35 Libman's mark did not de-


36. See id.37. See id. The intent to deceive the public is not seen as an element of likelihood

of confusion. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 22 cmt. b (1995). In-tent, however, is considered relevant and is used in the enumeration of the other factors.See id. See supra text accompanying note 28 for a list of the factors used in defininglikelihood of confusion.

38. See Libman, 876 F. Supp. at 189.39. See id.40. See id.41. See id.42. See id.43. See Libman, 876 F. Supp. at 189. The Lanham Trade-Mark Act allows the

plaintiff to seek injunctive relief against the defendant:The several courts vested with jurisdiction of civil actions arising under thischapter shall have power to grant injunctions, according to the principles ofequity and upon such terms as the court may deem reasonable, to prevent theviolation of any right of the registrant of a mark registered in the Patent andTrademark Office or to prevent a violation under section 1125(a) of this title.

15 U.S.C. § 1116(a) (1994).44. See Libman, 876 F. Supp. at 189. The Lanham Trade-Mark Act also provides

damages for the violation of rights:When a violation of any right of the registrant of a mark registered in thePatent and Trademark Office, or a violation under section 1125(a) of this title,shall have been established in any civil action arising under this chapter, theplaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 ofthis title, and subject to the principles of equity, to recover (1) defendant's prof-its, (2) any damages sustained by the plaintiff, and (3) the costs of the action.

pend upon only one color, but on a color combination which made itdistinctive.36

The court also held that, although the evidence was not strongon the issue of bad faith, Vining Industries made no effort to avoidinfringing upon Libman's trademark.37 The O'Cedar division respon-sible for developing the O'Cedar 2000 made no effort to check forpotential trademark infringement.38 Vining's marketing divisionchecked only on any possible patent infringement.39 Therefore, thecourt held that Vining's actions were insignificant in relation to thesignificance of the infringement.40 The court also relied upon the factthat Vining also continued to produce and market the O'Cedar 2000even after Libman protested.41 Thus, the court found Vining acted inbad faith when it pursued the marketing of the O'Cedar 2000.42

The trial court, therefore, concluded Vining did infringe uponLibman's mark and granted Libman's injunction against theO'Cedar 2000, which prohibited further sales of the broom.43 Thecourt also held that Libman could recover Vining's profits from thebrooms already sold.44 The court awarded Libman a total of


The court shall assess such profits and damages or cause the same to be as-sessed under its direction.

15 U.S.C. § 1117(a) (1994).45. See Libman, 876 F. Supp. at 190. Libman was awarded Vining's net profits,

which totaled $1,108,850, and prejudgment interest on Vining's profits, which totaled$58,840. See id.

46. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360 (7th Cir. 1995), cert. de-nied, 116 S. Ct. 1878 (1996).

47. See id. at 1364.48. See id.49. See Libman, 69 F.3d at 1363.50. See id. at 1363–64.51. See id. at 1362–64.52. For a discussion of this aspect, see infra Part III.B.2.53. See infra Part II.A.54. See infra Part II.B.55. See infra Part III.A.56. See infra Part IV.

$1,167,690 in damages, as well as the costs of the suit.45

Vining Industries appealed the decision to the Seventh CircuitCourt of Appeals,46 and in a two-to-one decision, the appellate courtreversed the trial court's decision.47 HELD: The evidence producedwas insufficient to find that Vining's actions created the likelihoodof consumer confusion necessary to support Libman's infringementclaims.48 The Seventh Circuit used only the lack of evidence of actualconfusion in determining Libman failed to prove that the likelihoodof confusion existed.49 The court neglected to consider other factorswhich are traditionally used to determine whether a likelihood ofconfusion exists.50 The Seventh Circuit engaged in a fact-findingmission by determining for itself whether Vining's product violatedLibman's trademark rights.51 This action overruled the authority ofthe district court as the finder of fact.52

This Note will first examine the progression of the LanhamTrade-Mark Act from its inception in 1946 through the various courtdecisions which have reevaluated the Act's breadth and scope.53 ThisNote will then discuss the evolution of color as a valid basis fortrademark protection.54 Next, it will examine the court's decisionwhich focuses on actual confusion as the sole factor to consider whenevaluating the likelihood of confusion.55 Finally, the use of thissingle-factor test will be critically reviewed in light of the apparentviolation of the guidelines of the Lanham Trade-Mark Act.56


57. Act of July 5, 1946, ch. 540, 60 Stat. 427 (codified as amended at 15 U.S.C. §§1050–1127 (1994)).

58. See Julius R. Lunsford, Jr., Trade-Marks and Unfair Competition — The De-mise of Erie v. Tompkins?, 40 TRADEMARK REP. 169, 169–71 (1950); see also DORIS E.LONG, UNFAIR COMPETITION AND THE LANHAM ACT 2–6 (1993) (discussing the early recog-nition of unfair competition claims).

59. 304 U.S. 64 (1938). The Supreme Court held that the doctrine of federal com-mon law established in Swift v. Tyson, 16 U.S. (Pet.) 1 (1842), did not exist. See id. at74–78. The Supreme Court stated:

Except in matters governed by the Federal Constitution or by Acts of Congress,the law to be applied in any case is the law of the State. And whether the lawof the State shall be declared by its Legislature in a statute or by its highestcourt in a decision is not a matter of federal concern . . . . Congress has nopower to declare substantive rules of common law applicable in a State whetherthey be local in their nature or “general,” be they commercial law or a part ofthe law of torts. And no clause in the Constitution purports to confer such apower upon the federal courts.

Id. at 78. This ruling created great problems for uniform trademark protection since thefederal rules governing trademark enforcement were common law, not statutory. SeeLunsford, supra note 58, at 170–74.

60. See LONG, supra note 58, at 6–7. The Committee on Trademarks and Patentspushed for a uniform federal statute after the Erie decision, arguing that national legis-lation was needed because trade was no longer local, but national in scope. See H.R.REP. NO. 76-944, at 4 (1939).

61. See Lunsford, supra note 58, at 177–83.62. See id.; see also LONG, supra note 58, at 11–13 (discussing the scope of protec-

tion under § 43(a) of the Lanham Trade-Mark Act).

II. HISTORICAL OVERVIEW

A. The Lanham Trade-Mark Act

Before the Lanham Trade-Mark Act of 1946,57 trademark legis-lation was established through a procedural process of trademarkregistration, while companies enforced the nature and scope oftrademarks through the courts and federal common law.58 As a re-sult of the Supreme Court decision in Erie Railroad Co. v.Tompkins,59 which nullified federal common law, Congress began towork toward codifying a uniform federal trademark statute to clarifythe piecemeal decisions from various states.60 In 1946, Congresspassed the Lanham Trade-Mark Act which incorporated the priorprocedural statutes for trademark registration and codified much ofthe trademark case law.61 The Lanham Trade-Mark Act broadenedthe scope of protection for trademarks by giving the owners of regis-tered marks greater rights and remedies.62

The Lanham Trade-Mark Act forbids the false representation of


63. 15 U.S.C. § 1125(a) states that[a]ny person who, or in connection with any goods or services, or any containerfor goods, uses in commerce any word, term, name, symbol, or device, or anycombination thereof, or any calls designation of origin, false or misleading de-scription of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceiveas to the affiliation, connection, or association of such person withanother person, or as to the origin, sponsorship, or approval of his orher goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents thenature, characteristics, qualities, or geographic origin of his or her oranother person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is oris likely to be damaged by such act.

15 U.S.C. § 1125(a) (1994).64. Id.; see also LONG, supra note 58, at 35–38.65. See Playboy Enters., Inc. v. Chuckleberry Publ'g, Inc., 486 F. Supp. 414, 428–29

(S.D.N.Y. 1980), aff'd, 687 F.2d 563 (2d Cir. 1982). In Playboy, Playboy Industries suedChuckleberry Publishing for trademark infringement of the name “Playboy.” See id. at418. The district court granted Playboy's injunction, see id. at 419, and the appellatecourt affirmed, see Playboy, 687 F.2d at 571.

66. See Playboy, 486 F. Supp. at 428; see also Steven Schortgen, “Dressing” UpSoftware Interface Protection: The Application of Two Pesos to “Look and Feel,” 80 COR-NELL L. REV. 158, 172–74 (1994) (discussing likelihood of confusion).

67. See Playboy, 486 F. Supp. at 428. In Playboy, the similarities between Playboyand Playmen would lead the consumers to believe that Playboy Enterprises had comeout with a magazine for middle-aged men. See id.

68. See id. The average consumer is more likely to read the defendant's Playmenmagazine due to the name connection with Playboy than if the magazine had a differentname, such as Adonis. See id.

a registered mark to the consumer population.63 To determine ifthere has been a false representation of a registered mark, the courtmust determine if the similar mark is “likely to cause confusion, orto cause [a] mistake” which will deceive customers.64 A plaintiffshould demonstrate that one of four possible confusions exists toshow infringement: (1) basic product confusion; (2) confusion as towho sponsored the product; (3) subliminal or conscious associationconfusion; or (4) reverse confusion.65 Product confusion occurs whenconsumers mistake one product for the other due to the similarity ofmarks.66 Sponsorship confusion occurs when the similarities be-tween two products cause the consumer to think that both productsare produced by the same manufacturer.67 Through subliminal orconscious association, the defendant uses the mark in order to gainsome of the plaintiff's market share.68 Reverse confusion occurswhen the consumer is confused over the source of the


69. See LONG, supra note 58, at 246. Reverse confusion results when the seconduser is more well known than the first user of the mark. See id. Courts recognize thisconcept under the Lanham Trade-Mark Act because the first user suffers a loss of valueof the trademark. See id.; see, e.g., McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d1163, 1170–71 (7th Cir. 1986) (holding that the district court erred in granting summaryjudgment to Disney because Disney's extensive use of the TRON mark violated McGrawEdison's prior trademark of the name for their fuses).

70. 287 F.2d 492 (2d Cir. 1961). Polaroid was registered as a valid trademark in1936. See id. at 493–94. The defendant, Polarad, was organized in 1944, and the Polar-oid Corporation had known of its existence since 1945 but chose not to pursue a trade-mark infringement lawsuit until 1956. See id. at 494. The plaintiff, Polaroid, claimedthat the defendant had infringed upon certain portions of the field of electronics whichthe plaintiff had claimed with its products. See id. at 495. The court held that the plain-tiff could not enforce a trademark infringement claim because 11 years had elapsed be-tween knowledge of the trademark violation and the institution of the lawsuit. See id. at496–98. The equitable defense of the doctrine of laches acted as a statute of limitations,precluding the plaintiff from pursuing the claim due to a period of undue delay. SeeRobert G. Sugarman, Defenses, in LITIGATING COPYRIGHT, TRADEMARK AND UNFAIR COM-PETITION CASES 1983, at 67, 67–70 (PLI Litigation & Administration Practice CourseHandbook Series No. 224, 1983).

71. See Polaroid, 287 F.2d at 495. The court used section 729 of the Restatement ofTorts when enunciating the likelihood of confusion factors. See id. Since both Polaroidand Polarad were in the field of electronics, Polaroid argued that the similarities of thetwo company names caused confusion among consumers. See id. at 493. However, thedefendant argued that it did not compete within the same consumer market as theplaintiff, since the plaintiff dealt with consumer goods while the defendant dealt withindustrial electronic equipment. See id. at 495.

72. Id. This list is enumerated in section 729 of the Restatement of Torts.

manufacturer's goods since the defendant used a similar mark.69

The likelihood of consumer confusion is a subjective test whichtakes into account a variety of factors. Judge Henry J. Friendly ex-pounded upon these factors in Polaroid Corp. v. Polarad ElectronicsCorp.70 The Second Circuit Court of Appeals outlined a variety offactors from the Restatement of Torts that courts could considerwhen determining if a likelihood of consumer confusion exists.71

Where the products are different, the prior owner's chance of suc-cess is a function of many variables: the strength of his make, thedegree of similarity between the two marks, the proximity of theproducts, the likelihood that the prior owner will bridge the gap,actual confusion, and the reciprocal of the defendant's good faith inadopting its own mark, the quality of defendant's product, and thesophistication of the buyers. Even this extensive catalogue does notexhaust the possibilities — the court may have to take still othervariables into account.72


73. The First Circuit addressed an additional factor in determining likelihood ofconfusion: “the relationship between the parties' channels of trade.” Boston Athletic Ass'nv. Sullivan, 867 F.2d 22, 28 (1st Cir. 1989). The Third Circuit used three additional fac-tors in determining whether likelihood of confusion actually exists:

[1] [T]he price of the goods and other factors indicative of the care and atten-tion expected of consumers when making a purchase; [2] the length of time thedefendant has used the mark without evidence of actual confusion arising;[and] . . . [3] other facts suggesting that the consuming public might expect theprior owner to manufacture a product in the defendant's market, or that he islikely to expand into that market.

Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983) (citing Scott Paper Co. v.Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978)). Several circuits haveadopted the Polaroid criteria as the basis for the test of likelihood of confusion. See, e.g.,International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1087 (7th Cir. 1988);Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 940 (10th Cir. 1983); McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir. 1979).

74. See LONG, supra note 58, at 43; see, e.g., Sicilia Di R. Biebow & Co. v. Cox,732 F.2d 417, 426 n.6–7 (5th Cir. 1984).

75. See LONG, supra note 58, at 43.76. See id.77. 537 F.2d 4 (2d Cir. 1976).78. See id. at 9–13. Abercrombie & Fitch sued Hunting World for marketing sport-

ing apparel identified with the same “Safari” trademark as Abercrombie. See id. at 7.Abercrombie & Fitch had registered and marketed the “Safari” mark. See id. The com-pany sought an injunction as well as an accounting for damages and profits. See id. Seeinfra notes 80–87 and accompanying text for a discussion of the four categories associat-ed with the varying degrees of protection.

79. Abercrombie, 537 F.2d at 9.

The Polaroid elements are not exhaustive but provide a broad baseof factors to consider when addressing likelihood of confusion.73

Thus, these likelihood of confusion elements, if shown by the plain-tiff, will demonstrate that the defendant has infringed upon theplaintiff's trademark right.

In addition, the plaintiff should show that the trademark inquestion distinctively identifies the business or the product.74 Thetrademark must be a distinct mark which will identify the productto the public.75 The primary method that courts have used in deter-mining the distinctiveness of marks is through categorizing themarks as generic, descriptive, suggestive, or arbitrary/fanciful.76 InAbercrombie & Fitch Co. v. Hunting World, Inc.,77 the Seventh Cir-cuit enunciated these four trademark categories and the variousdegrees of protection afforded to each.78 “The lines of demarcation,however, are not always bright . . . because a term may shift fromone category to another in light of differences in usage throughtime . . . .”79


80. Id. A generic term is a common name of good or service; generic terms cannotbe subject to trademark protection regardless of the marketing used to promote the prod-uct. See LONG, supra note 58, at 44–46.

81. See Abercrombie, 537 F.2d at 11–12 (holding that the word “Safari” had becomegeneric when associated with hats).

82. See Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (holdingthat the name Aspirin had become so tied to the product that the term was now gener-ic).

83. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 (1995). This occurswhen a trademark is not “distinctive when first adopted, but may acquire distinctivenessover time. When such a mark has come to signify that an item is produced or sponsoredby a particular merchant it is said that the mark has secondary meaning.” BLACK'S LAW

DICTIONARY 1351 (6th ed. 1990).84. See Abercrombie, 537 F.2d at 9–10. A merely descriptive mark is not protected

through registration. See id. at 10. The mark must have become a distinctive aspectwithin the commercial market. See id. For example, Judge Friendly cites to evidence ofa mark being used exclusively for a period of five years preceding registration as show-ing that the mark has become distinctive. See id.

85. Abercrombie, 537 F.2d at 11 (citing Stix Prods., Inc. v. United Merchants &Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968)); see also LONG, supra note 58, at49–50.

86. See Abercrombie, 537 F.2d at 11.87. See id.; see also LONG, supra note 58, at 50–51. Arbitrary or fanciful marks

“bear no relationship to the product or service with which they are associated.” Soweco,Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir. 1980).

First, a generic term is defined as the “genus of which the par-ticular product is a species.”80 A generic mark, like “Safari” hats81 orAspirin,82 is completely intertwined with the product it representsand, thus, is never protected as a mark. A descriptive mark must ac-quire the necessary secondary meaning,83 which will identify thecharacteristic or quality of the product within the market to gainprotection.84 However, a mark which is described as suggestive re-quires the consumer use “imagination, thought and perception toreach a conclusion as to the nature of goods.”85 Suggestive marks,unlike those categorized as descriptive marks, are registered with-out specific proof of secondary meanings.86 Arbitrary or fancifulmarks receive the broadest protection under trademark registrationand also do not require proof of secondary meaning to be regis-tered.87 Thus, a company should make sure that its mark is eitherarbitrary, fanciful, or suggestive, or that it has attained secondarymeaning.

B. Color as a Basis for Trademark Protection


88. See Daniel R. Schechter, Comment, Qualitex Co. v. Jacobson Prods., Inc.: TheSupreme Court “Goes for the Gold” and Allows Trademark Protection for Color Per Se, 5FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 481, 482 (1995). See infra text accompanyingfootnotes 114–20 for an example of the use of the interconnection of a symbol and colors.

89. See LONG, supra note 58, at 104. The Lanham Trade-Mark Act, 15 U.S.C.§ 1125 (1994), does not make specific reference to color as a protected trademark. Thestatute only references the following items: “word, term, name, symbol, or device, or anycombination thereof.” Id.

90. See Richard J. Berman, Note, Color Me Bad: A New Solution to the Debate overColor Trademark Registration, 63 GEO. WASH. L. REV. 111, 116–20 (1994); see, e.g.,Qualitex Co. v. Jacobson Prods. Co., 115 S. Ct. 1300, 1305–08 (1995) (citing thedefendant's arguments for not allowing a color per se trademark).

91. See 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETI-TION § 7.16(1), at 7–66 (3d ed. 1995). This theory is traditionally referred to as the colordepletion or color monopolization rule. See id. People can distinguish only a few basiccolors despite the fact that hundreds of shades exist within a specific color. See id. at7–69.

In Life Savers Corp. v. Curtiss Candy Co., 182 F.2d 4, 9 (7th Cir. 1950), theSeventh Circuit used the color depletion theory to prohibit the trademarking of color ona per se basis alone. Color can only be trademarked in association with “some definitearbitrary symbol or design.” Id. In Campbell Soup Co. v. Armour Co., 175 F.2d 795, 798(3d Cir. 1949), the Third Circuit denied Campbell Soup Company trademark protectionfor its red and white soup label since the company wanted trademark protection forcolor. The court prohibited trademark protection for color alone, stating that color canonly be trademarked in connection with a distinctive design. See id. at 799.

What the plaintiffs are really asking for, then, is a right to the exclusive use oflabels which are half red and half white for food products. If they may thusmonopolize orange in all of its shades the next manufacturer may monopolizered in all of its shades and the next yellow in the same way. Obviously, thelist of colors will soon run out.

Id. at 798.92. 1 MCCARTHY, supra note 91, § 7.16(1), at 7–71 to 7–72. Consumers are sup-

Traditionally, color has been recognized as a trademark if thecolor is used in connection with another symbol.88 But the courtshave been reluctant to recognize color per se as a register-able trademark.89 Courts have used four different policy reasons todeny trademark protection for color on a per se basis: (1) the colordepletion theory; (2) the shade confusion theory; (3) the symbolprotection theory — where existing color protection schemes can beprotected as part of symbol protection; and (4) the prejudice theory— where by changing the law, those who acted in reliance on the oldlaw will be injured.90 The color depletion theory occurs when, in agiven line of commerce, only limited colors are available and allcolors will be taken if allowed to be trademarked.91 The shade con-fusion theory occurs when two companies seek to mark “closely simi-lar shades.”92 Courts using the symbol protection theory state that


posed to have difficulties distinguishing between various shades of a marked color. Seeid. In Youngstown Sheet & Tube Co. v. Tallman Conduit Co., 149 U.S.P.Q. (BNA) 656,657 (Patent Office Trademark Trial & Appeal Board 1966), the trademark appeal boardheld that the color orange could not be trademarked for banding pipe when anothercompany had already established gold as its trademark for their piping. The applicant'sorange stripe on its piping was not distinguishable from the gold stripe, and thus, thetwo products were likely to be confused. See id. at 657–58. But see In re Hodes-LangeCorp., 167 U.S.P.Q. (BNA) 255, 256 (Patent Office Trademark Trial & Appeal Board1970) (holding that no likelihood of confusion could exist between a brilliant yellow bandand a bronzy gold band).

93. See Qualitex Co. v. Jacobson Prods. Co., 115 S. Ct. 1300, 1308 (1995). Color canbe used in conjunction with other marks or symbols in an arbitrary pattern to create avalid trademark. See Southwestern Bell Tel. Co. v. Nationwide Indep. Directory Serv.,Inc., 371 F. Supp. 900, 911 (W.D. Ark. 1974). See also infra notes 114–20 and accompa-nying text for a discussion of the use of colors and symbols in Ambrit, Inc. v. Kraft, Inc.,812 F.2d 1531 (11th Cir. 1986).

94. For an example of a defendant arguing this theory in trademark litigation, seeQualitex, 115 S. Ct. at 1307. It is argued that the companies violating a color trademarkare relying on older court decisions, and thus, these marks should be protected. See id.;see also A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166,170–71 (1906) (holding that use of a colored strand intertwined around the rope to betoo indefinite for use as a valid trademark); Coca-Cola Co. v. Koke Co. of Am., 254 U.S.143, 147 (1920) (holding that “[t]he product including the coloring matter is free to allwho can make it if no extrinsic deceiving element is present”).

95. 456 U.S. 844 (1981). Ives Laboratory manufactures the drug CYCLOSPASMOL.See id. at 850. Ives Laboratory sued Inwood Laboratory under 15 U.S.C. § 1125(a) andalleged that Inwood copied the drug's capsule color to make a cheaper generic capsule ofCYCLOSPASMOL. See id. Ives argued that the color was not generic and had acquired asecondary meaning within the consumer market. See id. at 850–51; see also Ives Lab.,Inc. v. Darby Drug Co., 488 F. Supp. 394, 398–99 (E.D.N.Y. 1980) (discussing the func-tional aspects of red-blue coloring of the drug).

96. Cf. Ives, 456 U.S. at 853, 855 n.16 (stating that the district court's factual in-ferences were reasonable).

color does not need separate protection because it receives protectionas part of a unique symbol.93 Finally, a company using the prejudicetheory can point to older cases that it relied upon to support its posi-tion against trademarking color per se.94

The traditional approach towards color per se was used inInwood Laboratory, Inc. v. Ives Laboratory, Inc.95 The SupremeCourt in Ives supported the district court's finding that the blue-redcolor of the capsule was a functional aspect of the product that al-lowed patients and doctors to easily identify the drug CYCLO-SPASMOL.96 Thus, the district court allowed Inwood Laboratories touse the same blue-red coloring in its generic equivalent toCYCLOSPASMOL since it was declared a functional aspect of the


97. See id. at 853.98. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985).99. Id.

100. See id. at 1128. In 1980, Owens-Corning applied for a patent for the color pinkto function as a trademark for its insulation. See id. at 1118. The Patent and TrademarkOffice's Trademark Trial and Appeal Board denied Owens-Corning's petition on thegrounds that it had not demonstrated the distinctiveness of pink as a trademark for itsfiberglass; Owens-Corning appealed. See id.

101. See id. at 1124. The court held that Owens-Corning's pink fiberglass had ac-quired secondary meaning within the marketplace. See id.

102. See id. at 1122. The color pink is seen as ornamental and not as functional.See id.

103. See id. at 1120.104. See Owens-Corning, 774 F.2d at 1128.105. 917 F.2d 1024 (7th Cir. 1990).106. See id. at 1025. NutraSweet began manufacturing “Equal,” a sugar substitute

in a blue package, in 1981. See id. at 1026. In 1988, Cumberland, the manufacturer of“Sweet and Low,” introduced “Sweet One” in a similar blue package. See id. NutraSweetsued Cumberland and alleged that the use of the blue packaging violated NutraSweet'strade dress protection. See id.

product.97

In 1985, the courts began to acknowledge and allow the en-forceability of a color per se trademark.98 In In re Owens-CorningFiberglas Corp.,99 the Federal Circuit held that the company wasentitled to a federal registration for its pink fiberglass.100 Owens-Corning's extensive marketing, promotion, and sales over a period ofmany years established the color pink as a valid trademark forwhich it sought protection.101 This court concluded that the color inOwens-Corning's trademark was not a functional item which wouldbar it from protection.102 It also held that the color depletion argu-ment used by the appeals board created an unreasonable restrictionto trademark registration of color per se.103 It then concluded thatunder the Lanham Trade-Mark Act color per se was entitled to pro-tection, registration, and recognition.104

Owens-Corning has been distinguished because it dealt withfiberglass, which is not considered a common household good sold inmass quantities within retail stores. When dealing with commonproducts, other courts have decided not to allow trademark protec-tion for color per se. For example, in NutraSweet Co. v. StadtCorp.,105 the Seventh Circuit followed its own precedent and did notallow trademark or trade dress protection for NutraSweet's bluepackaging.106 The court held that color can only be protected if it is


107. See id. at 1027.108. See id.109. See id. at 1028. NutraSweet argued that in this market “Equal” means blue,

“Sweet and Low” means pink, and “Sugar Twin” means yellow. See id. The court wasconcerned with the impact trademarking this color coding of sweeteners would have onfuture entrants in the market. See id.

110. 809 F.2d 1378 (9th Cir. 1987).111. See id. at 1381–83. Union Carbide manufactures Prestone II brand antifreeze

and filed suit for a preliminary injunction against Fred Meyer, Inc. See id. at 1380–81.The district court denied the injunction against Fred Meyer's selling of antifreeze inyellow-colored containers. See id. at 1381. Union Carbide appealed. See id.

112. See id. The color yellow was determined to be a functional aspect of the anti-freeze packaging industry. See id. The color yellow is seen as an essential aspect of theproduct and of the product's use. See id.

113. See id. at 1382 (holding that the rule stated in Owens-Corning was unusual,and the color per se rule is limited to very specific situations).

114. 812 F.2d 1531 (11th Cir. 1986).115. Ambrit Corporation was formerly known as the Isaly Corporation. See id. at

1531.116. See id. at 1535–37. In 1928, Isaly began selling Klondike bars, a square

chocolate-covered ice cream bar, with the bar wrapped in foil with blue, silver, and whitecolors and the figure of a polar bear on the wrapping. See id. at 1533. Kraft began sell-ing Polar B'ars in 1979, and the bars were packaged similarly. See id. at 1534. Isalyfiled suit under the Lanham Trade-Mark Act and alleged that Kraft's packaging in-

part of a symbol or a design.107 Therefore, the Lanham Trade-MarkAct does not protect the use of color per se as a trademark.108 Thecourt also stated that changing the trademark law in this case couldcreate a barrier to lawful competition.109

The courts also recognized color as a functional aspect of theproduct in order to avoid protection for color per se. For example, inFirst Brands Corp. v. Fred Meyer, Inc.,110 the Ninth Circuit held thatthe plaintiff's yellow-colored antifreeze containers could not be pro-tected under the Act due to the functionality of the product.111 Theplaintiff could not prevent the defendant from selling the antifreezeproduct in a similar yellow container, since yellow is seen as a func-tional element in the antifreeze market.112 However, the court didacknowledge that color could be used as a trademark; but it statedthat the product's package shape must be distinctive in connectionwith color before the product can be trademarked.113

Furthermore, Ambrit, Inc. v. Kraft, Inc.114 demonstrated theway courts viewed color in relation to a product's symbol. In Ambrit,the Eleventh Circuit allowed the colors within Islay's115 trademarkto be protected, since the colors were integrally related to symbolsused on the packaging of the chocolate-covered ice cream bar.116 The


fringed upon Isaly's design. See id.117. “Trade dress involves the total image of a product and may include features

such as size, shape, color or color combinations, texture, graphics, or even particularsales techniques” for the product. Id. at 1535 (quoting John Harland Co. v. ClarkeChecks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)). The plaintiff must prove the tradedress is a nonfunctional, yet distinctive item. See LONG, supra note 58, at 112–13.

118. See Ambrit, 812 F.2d at 1535–37.119. See id. at 1535 (discussing the district court's findings).120. See id.121. 505 U.S. 763 (1992).122. See id. at 774. Taco Cabana opened its first Mexican fast food restaurant in

1978 and by 1985 had a chain of Mexican restaurants in the San Antonio area. See id.at 765. Two Pesos opened a Mexican fast food restaurant in Houston in 1985 and essen-tially adopted the decor and environment of Taco Cabana. See id. In 1986, Taco Cabanaexpanded its restaurants throughout Texas, including Houston. See id. In 1987, TacoCabana filed suit for trade dress infringement. See id. The district and appellate courtsfound that Two Pesos had violated Taco Cabana's trade dress. See id. at 766–67.

123. See id. at 768.124. See id. at 775. Secondary meaning occurs when a product “become[s], as a re-

sult of its use by a specific person, uniquely associated with that person's goods, ser-vices, or business.” RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 cmt. e (1995).

125. See Two Pesos, 505 U.S. at 775–76.

court held that the entire packaging, including the polar bear sym-bol and the colors white, silver, and black, constituted Isaly's pro-tected trade dress117 for the product.118 Isaly's trade dress had be-come distinctive, and Kraft's similar packaging for its product cre-ated a likelihood of consumer confusion.119 Thus, the colors wereincluded within the trademark protection because they were an in-tegral part of the symbol.120

Two Pesos, Inc. v. Taco Cabana, Inc.121 validated the protectionof color as it relates to other symbols within the product's tradedress. The Supreme Court held a product's trade dress that is in-herently distinctive does not need to acquire a secondary meaning tobe protected as trade dress.122 The mark or dress must inherentlyidentify, not merely describe, the specific source to be protected.123

The company may use color within the product's trade dress to cre-ate inherent distinctiveness which protects the mark. The court alsofound that requiring a mark to attain a secondary meaning is atodds with the other principles applicable under infringementsuits.124 Thus, the company must show only that the mark is inher-ently distinctive to gain legal protection.125 Product identification isextremely difficult if the company must show both inherent distinc-tiveness as well as a secondary meaning; this dual requirement


126. See id. 127. 986 F.2d 219 (8th Cir. 1993).128. See id. at 221. Master sells “Blue Max,” a blue leader splicing tape, which is

used to attach undeveloped film to leader cards. See id. at 220. Pako began manufactur-ing its own brand of blue leader splicing tape, and Master sued for trademark infringe-ment. See id. The district court dismissed Master's suit. See id. at 221.

129. See id. at 222–23. The court stated the four traditional reasons for not allowinga color per se trademark are (1) changing the law and allowing color protection wouldprejudice those who acted in reliance of the old law; (2) color is already protected aspart of symbol protection; (3) there could be possible shade confusion which could onlybe decided through litigation; and (4) there could be color depletion problems if color isto be trademarked. See id. at 222.

130. See id. at 223.131. See id. Color must provide an essential utility to the product for the color mark

per se to be recognized. See id. at 224.132. See id.133. 4 F.3d 819 (9th Cir. 1993).

creates more confusion among consumers when trying to distinguishamong competing products.126

Thus, after Two Pesos, companies seeking protection for colorper se could attempt to show that color is an inherently distinctivetrade dress or could acquire a secondary meaning which requiresprotection from infringement. For example, in Master Distributors,Inc. v. Pako Corp.,127 the Eighth Circuit held that no per se rule pro-hibits the protection of color alone as a trademark.128 The EighthCircuit followed the Supreme Court's lead and rejected the tradi-tional reasons which have prohibited the trademarking of color perse.129 Once the manufacturer has met the requirements for obtainingtrademark protection, the fact that color is the subject of the trade-mark application should not bar a product's protection.130 But themanufacturer's use of color did not guarantee that its property rightwould be enforced; the manufacturer should attain a secondarymeaning which will allow protection for the color.131 Therefore, with-out secondary meaning, the court could prohibit color per se as atrademark. This prohibition would make valid trademarks ineffec-tual and unenforceable.132

However, other courts did not acknowledge that color could beprotected as part of a trade dress. For example, in InternationalJensen, Inc. v. Metrosound U.S.A., Inc.,133 the Ninth Circuit deniedprotection for International Jensen's use of a blue-colored, surround-sound speaker cover since the color blue was not considered a dis-


134. See id. at 821. International Jensen manufactures car and truck speakers witha blue-colored cone attached to the speaker housing. See id. In 1989, Metrosound U.S.A.introduced a new line of speakers with the same blue casing. See id. InternationalJensen filed a preliminary injunction against Metrosound U.S.A. and alleged violations ofthe Lanham Trade-Mark Act. See id. The district court denied the motion for the prelim-inary injunction and asserted that functional constraints precluded trademark infringe-ment. See id.

135. See id. at 823. A trademark is considered functional when it is essential to theproduct's use or purpose. See id. Color can be a functional item through the color deple-tion theory. See id.

136. See id. at 823–24.137. See id. at 825.138. See id.139. 115 S. Ct. 1300 (1995).140. See id.141. See id. at 1303. For years, Qualitex Corporation had used a shade of green-gold

for its dry cleaning press pads. See id. at 1301. In 1989, Jacobson Products began manu-facturing its own press pads in the same green-gold shade. See id. Qualitex registeredthe green-gold color for the pads and then filed suit for trademark infringement. See id.The district court found for Qualitex, but the Ninth Circuit reversed the infringementjudgment. See Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297, 1301 (9th Cir. 1994),rev'd, 115 S. Ct. 1300 (1995). The Ninth Circuit held that the Lanham Trade-Mark Actdoes not protect color per se. See id. at 1302. The Ninth Circuit relied on the color de-pletion and the shade confusion theories as well as the fact that color can be protectedthrough a distinctive logo as reasons for denying color per se protection. See id. Ade-

tinctive element in its trade dress.134 The Ninth Circuit determinedthat for an item to be trademarked, all aspects of the product mustbe taken together as a total image for the product; one cannot trade-mark each element separately.135 This court was concerned that thecolors within a market might be depleted.136 The InternationalJensen, Inc. v. Metrosound U.S.A., Inc. court also held that no likeli-hood of confusion existed because the total effect of the product wasmore than just the blue-colored speaker cover.137 Therefore, thecourt found that no confusion exists for consumers in regards toMetrosound's infringement claim.138 Thus, despite the infringementon the color blue, International Jensen was not entitled to color pro-tection under trade dress. Although denying protection in this case,the Ninth Circuit did not expressly prohibit trademark protectionfor color per se.

Finally, in Qualitex Co. v. Jacobson Products Co.,139 the Su-preme Court established that color per se can be used as a symbolfor a product or company.140 In Qualitex, the Supreme Court heldthat a corporation can register colors as trademarks if the colorshave attained a secondary meaning.141 Color is included within the


quate protection for color can be assured through a trademarked pattern. See id.; seealso 1 MCCARTHY, supra note 91, § 7.16.

142. See Qualitex, 115 S. Ct. at 1302. Color trademark should not be used to extendthe life of a patent so the manufacturer can have a monopoly forever. See id. at 1304.

143. See id. Color can identify a good or product without serving any other particu-lar function. See id.

144. See id. at 1303. The doctrine of functionality should not serve as an absolutebar to the use of color as a trademark. See id. at 1304.

145. See id. at 1305–08. See supra notes 89–94 and accompanying text for a discus-sion of the four traditional reasons used for denying the trademarking of color per se.

146. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360 (7th Cir. 1995), cert. de-nied, 116 S. Ct. 1878 (1996).

147. See id. at 1361.148. See id. The court cites to 15 U.S.C. § 1114(1)(b) for support of this assertion.

See id. Section 1114(1)(b) states:(1) Any person who shall, without the consent of the registrant—

(b) reproduce, counterfeit, copy, or colorably imitate a registered markand apply such reproduction, counterfeit, copy, or colorable imitationto labels, signs, prints, packages, wrappers, receptacles or advertise-ments intended to be used in commerce upon or in connection withthe sale, offering for sale, distribution, or advertising of goods or ser-vices on or in connection with which such use is likely to cause con-fusion, or to cause mistake, or to deceive,

spectrum of items which can qualify under trademark protection.142

A color alone can attain a secondary meaning that sets the productapart due solely to the color's distinctiveness.143 The Supreme Courtfound that color, unlike words alone, will automatically tell a con-sumer the brand he or she has purchased.144 Then, the SupremeCourt examined and disregarded the four reasons that courts havetraditionally not protected color per se as a trademark.145

III. COURT'S ANALYSIS

In a split decision, the Seventh Circuit invalidated Libman'sclaim against Vining Industries for trademark infringement on itsLibman 201 broom with contrasting colored bristles.146

A. The Majority Opinion

Chief Judge Richard Posner, writing for the majority, statedthat Libman did not present enough evidence to show a likelihood ofconfusion existed between the Libman 201 broom and the O'Cedar2000.147 Libman could not show likelihood of confusion withoutshowing that the consumers were actually confused over the similarproducts on the market.148 The court stated “a trade


shall be liable in a civil action . . . .15 U.S.C. § 1114(1)(b) (1994).

149. Libman, 69 F.3d at 1361.150. See id.151. See id. Libman failed to conduct a survey which could show that a likelihood of

confusion actually does exist. See id. The court also pointed to the fact that the packag-ing differs between the two products. See id. The packaging on Vining's O'Cedar 2000covers all the bristles so the contrasting color bristles are not able to be seen by theconsumer's eye. See id.

152. See id. at 1362. Both brooms are covered with wrappers in the stores. See id.The court found that the consumer would never have the occasion to ask the salespersonto remove the wrapper to inspect the bristles because the consumer could just feel thebristles through the wrapper. See id.

153. See Libman, 69 F.3d at 1362. Since brooms are bulky items, a store will typi-cally either stock its shelves with one line or the other. See id.

154. See id.155. See id. The court looked at the brooms in side-by-side comparison during the

oral arguments. See id.156. See id. Reverse confusion occurs when there is consumer confusion “regarding

the source or sponsorship of the plaintiff's goods as a result of the defendant's use of aconfusingly similar mark . . . .” LONG, supra note 58, at 246. See supra note 69 for adiscussion of reverse confusion.

157. See Libman, 69 F.3d at 1363. The court rejected the argument for reverse con-fusion in this case. See id.

158. See id.

mark is not a property right but an identifier of a product.”149 There-fore, if no actual confusion exists, there is no impairment ofLibman's interest in the product was not impaired.150 The courtnoted that Vining had sold hundreds of thousands of O'Cedar 2000brooms and yet no consumer had complained to Libman that theywere confused.151

The court found that the only two things the brooms have incommon is that they are brooms and that they have contrasting-color bristles.152 The court stated that, since the consumer would notencounter the two brooms together in a store,153 the consumer wouldnot likely experience confusion over the similar items.154 Also, theminor differences between the products would distinguish any con-sumer side-by-side comparison, although there could still be a likeli-hood of actual confusion.155 Thus, the court rejected Libman's argu-ment that reverse confusion156 would occur.157

The court also found Libman argued in error when it assertedthat a conceptual confusion between the products would fool con-sumers who shopped for Libman brooms and found only Viningbrooms.158 Libman presented no evidence which would show that


159. See id. The court found that a “pure conjecture or a fetching narrative alone”cannot be used to meet the burden of proof. Id. Libman showed no proof that consumerswould actually be confused over the similarity between the products. See id.

160. See id. As the record appeared to the court, Vining saw that the Libman broomwas selling rapidly, “inferred that consumers like brooms with contrasting color bands,and decided to climb on the bandwagon.” Id. The court asserted that this was the es-sence of competition, not a bad faith intent to infringe on Libman's trademark. See id.

161. See Libman, 69 F.3d at 1363.162. See id. The court held that the line is fine, but Vining had not crossed it. See

id.163. See id. Compare Libman, 69 F.3d at 1363, with Qualitex, 115 S. Ct. at 1308

(allowing colors to be registered as trademarks).164. See Libman, 69 F.3d at 1363.165. See id. at 1363–64. The court found that Libman's assertions that consumers

would be confused to be purely hypothetical without factual statistics of actual confusion.See id. at 1364. Libman could have easily found consumers who could have supportedthis theory. See id.

166. See id.167. See id. at 1364 (Coffey, J., dissenting).

consumers would suffer confusion when they encountered theO'Cedar 2000 while looking for a Libman 201 broom.159 AlthoughLibman asserted that Vining exercised bad faith when it deliberate-ly copied the Libman 201 broom, the Seventh Circuit found Viningwas not intentionally trying to confuse consumers.160 Thus, Vining'sactions were in the scope of competition, not infringement.161

The feature Vining allegedly infringed upon was not of intrinsicvalue, but was only used as a product identifier.162 The court did findthat Libman's contrasting-color bristle broom was distinctiveenough to be registered.163 However, it is a confusing propositionthat Libman's trademark could be inferred as “jazzing up” a commonitem, but not as a product identifier.164 The Seventh Circuit deter-mined that this was not a case where consumers were likely to con-fuse the source of the product.165 Thus, the court reversed the dis-trict court's decision in Libman's favor and entered judgment forVining Industries.166

B. Coffey's Dissent

Coffey criticized two aspects of the majority's decision: thechanges made by the majority in the likelihood of confusion stan-dard, and the majority's disregard of the clearly erroneous standardof review.167


168. See id.169. See Libman, 69 F.3d at 1364 (Coffey, J., dissenting).170. See id.171. See id. at 1365.172. See id. at 1364.173. See id. at 1361.174. See id. at 1365.175. See Libman, 69 F.3d at 1365 (Coffey, J., dissenting). See, e.g., Smith Fiberglass

Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); McGraw-Edison Co. v.Walt Disney Prods., 787 F.2d 1163, 1166 (7th Cir. 1986).

176. Id. at 1364–65 (Coffey, J., dissenting) (citing Smith Fiberglass Prods., Inc. v.Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); AHP Subsidiary Holding Co. v. StuartHale Co., 1 F.3d 611, 615 (7th Cir. 1993); International Kennel Club, Inc. v. MightyStar, Inc., 846 F.2d 1079, 1087 (7th Cir. 1988)).

177. See Libman, 69 F.3d at 1364–65 (Coffey, J., dissenting).

1. Likelihood of Confusion

Libman based its case on the fact that consumers would confuseits Libman 201 with the O'Cedar 2000.168 Since the brooms greatlyresemble each other, consumers would be misled by the similaritybetween the two products when shopping for a replacementbroom.169 But Libman presented no evidence, no surveys, and no an-ecdotal data to show actual consumer confusion.170 Actual consumerconfusion is entitled to substantial weight, but it is not the onlyfactor weighed when measuring likelihood of confusion.171 Actualconfusion is only one of the elements in the test for likelihood of con-fusion.172

The majority held that the evidence of likelihood of confusionwas very slim.173 But the majority used only evidence of actual con-fusion in its analysis of likelihood of confusion.174 This opinion de-parted from precedent which used seven factors to determine likeli-hood of confusion.175 In Libman, Coffey enunciated the following asbeing relevant factors in determining whether a likelihood of con-fusion exists:

(1) [S]imilarity between the marks . . . ; (2) similarity of the prod-ucts; (3) area and manner of concurrent [advertising and] use; (4)degree of care likely to be exercised by consumers; (5) strength ofcomplainant's mark; (6) actual confusion; and, (7) intent of defen-dant to “palm off [its] product as that of another.”176

The majority elevated actual confusion to the most important factoron the list.177 The dissenting judge was concerned because the ma-


178. See id.179. See id. at 1365.180. See id. at 1365.181. See id. at 1366 (Coffey, J., dissenting). This satisfies factor one. See id. The

plaintiff in the prima facie case must prove there is “a high degree of similarity betweenthe marks and, though their presentation is different, the possibility of confusion existsbased upon the marks alone.” McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163,1168 (7th Cir. 1986).

182. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting). These encompass factorstwo and three. See id. The Seventh Circuit defines factor two as “whether the productsare the kind the public attributes to a single source.” McGraw-Edison, 787 F.2d at 1169(quoting E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525,1530 (11th Cir. 1985)). To prove the third factor, the plaintiff must show that the defen-dant has utilized the same or similar outlets or marketing channels. See id. at 1169–70.

183. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting). Coffey enunciated these asthe fourth and sixth factors. See id. The plaintiff must establish the degree of care typi-cally used by consumers when purchasing the products. See McGraw-Edison, 787 F.2d at1170.

184. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting). To assess the fifth factor,the plaintiff must prove that the mark is descriptive, suggestive, or arbitrary/fancifuland, therefore, that consumers recognize it distinctly. See McGraw-Edison, 787 F.2d at1170–71. With the seventh element, the plaintiff must show that the defendant's product“increased the likelihood that a consumer would be confused into believing there was acommon sponsorship or authorization between the parties or their products, and in-creased the dilution of plaintiff's mark.” Id. at 1173.

185. See Libman, 69 F.3d at 1366 (Coffey, J., dissenting).

jority “swept under the rug” the remaining six factors, contradictingprecedent.178

The dissent stated that Libman's product was a low-cost, im-pulse item, the choice over which consumers would not debate.179

The court must, therefore, look at the totality of the circumstancesas it had done in prior trademark infringement cases.180 The twobrooms have a similar design,181 and both the Libman 201 and theO'Cedar 2000 target the same consumers and retail outlets.182 Al-though there was no proof of actual confusion, the dissent found thisproduct was not one that the consumer would be likely to complainabout if he or she mistakenly purchased a different brand.183 Libmandid show that individual consumers actually recognized and askedfor the Libman 201 when it was advertised.184 Additionally, Libmandemonstrated that Vining did not research any possible trademarkviolations with the O'Cedar 2000 and appeared not to be concernedwith avoiding the infringement.185 Coffey agreed with the districtcourt's finding that, since Libman proved six of the seven elementsof the prima facie case for trademark infringement, Vining had the


186. See id. at 1366.187. See id.188. See id. (citing McGraw-Edison, 787 F.2d at 1167).189. See id. at 1366.190. See id. at 1367.191. See Libman, 69 F.3d at 1367 (Coffey, J., dissenting).192. See id. at 1366.193. Id. at 1367.194. See id.195. Id. at 1368.196. See id.197. Libman, 69 F.3d at 1368 (Coffey, J., dissenting).198. See id.

burden of rebutting the evidence stacked against it.186 Since Viningnever rebutted this evidence, the district court was within its powerto find for Libman.187

2. Appellate Review of Likelihood of Confusion

Whether a likelihood of confusion actually exists is a question offact and not a question of law.188 Thus, the appellate court mustaffirm the trial court's determination unless a clear showing of errorhas been shown.189 If the trial court's rulings rest on credibility de-terminations or on the documentary evidence, the appellate courtcannot reverse on a clearly erroneous standard.190 This aspect isespecially critical since trademark infringement is a highly fact-based determination.191 The Supreme Court has stated that an ap-pellate court must not reevaluate the factual conclusions unlesserror has been committed.192

The majority in Libman reanalyzed Libman's argument con-cerning likelihood of consumer confusion and declared that it was a“plausible narrative.”193 But the majority went on to contradict itselfby stating that Libman's claims amounted to nothing more than“pure conjecture.”194 The majority “substituted its own judgment forthat of the district court.”195 The majority willingly reviewed thefactual circumstances in the case to reevaluate the likelihood ofconfusion.196 In doing so, the majority determined that the Libmanmark was “merely a way . . . of jazzing up the humblest of utilitarianproducts.”197 Thus, the dissent stated that the majority struck downthe district court's finding of fact where it should have only reversedfor errors of law or for lack of credibility of the issues.198


199. See, e.g., International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1087(7th Cir. 1988); McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167–68 (7thCir. 1986).

200. See, e.g., Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 28 (1st Cir. 1989);McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1166 (7th Cir. 1986);Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983). For the text of 15 U.S.C.§ 1125(a) (1994) see supra note 63.

201. For a discussion of the court's use of the multi-factor test, see supra notes64–65 and accompanying text. See also RESTATEMENT (THIRD) OF UNFAIR COMPETITION

§ 21 (1995).202. See, e.g., NutraSweet Co. v. Stadt Corp., 917 F.2d 1024 (7th Cir. 1990).203. In Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d

Cir. 1986), the Second Circuit stated “that actual confusion need not be shown to prevailunder the Lanham Act, since actual confusion is very difficult to prove and the Act re-quires only a likelihood of confusion as to source.”

IV. CRITICAL ANALYSIS

The Seventh Circuit historically used a seven-factor test to de-termine if a likelihood of consumer confusion exists between thetrademarked product and the allegedly infringing product.199 Thecourts, following the precepts of the Lanham Trade-Mark Act, haveequally weighed these factors when determining whether alikelihood of confusion exists.200 Traditionally, courts did not giveone or two specific elements greater deference when weighing thefactors involved.201

This seven-factor test is especially critical when the productallegedly being infringed upon has a common, everyday usage like acolored sugar substitute packet or a broom.202 In these situations,actual confusion can be difficult to prove because the product is com-mon, inexpensive, and prone to impulse buys.203 Therefore, consum-ers will not normally voice their criticisms over the perceived prod-uct confusion because of the item's low cost. Thus, companies likeLibman that produce low-cost items have great difficulty provingactual confusion. These companies should not, however, experiencedifficulties in showing the similarities between their trademarkedproduct and the other product. For these reasons, the courts mustweigh all factors equally when determining a potential violation of atrademark.

A. The Other Factors Not Considered in Libman


204. See supra notes 8–10 and accompanying text for a discussion of the physicaldescription of the Libman 201.

205. See supra text accompanying notes 21–22 for a discussion of the physical char-acteristics of the O'Cedar 2000.

206. For a discussion of the similarities between the Qualitex and the Jacobsonproducts, see supra notes 139–45 and accompanying text.

207. See supra text accompanying note 23.208. See supra text accompanying notes 10, 22.209. 787 F.2d 1163, 1168 (7th Cir. 1986). In McGraw-Edison, the district court

pointed to the difference in the print type of the two marks and found that this mark“differentiation” eliminated confusion with the consumers. See id. The Seventh Circuitreversed this contention and stated that the district court incorrectly distinguished thelettering between the two marks. See id.

210. See id. at 1168–69.211. Libman Co. v. Vining Indus., Inc., 876 F. Supp. 185, 188 (C.D. Ill. 1995), rev'd,

Libman could have demonstrated the likelihood of confusionbetween the O'Cedar 2000 and the Libman 201 using the factors notconsidered by the court. First, the company pursuing trademarkinfringement must show a similarity between the identifying marksof the two products; Libman used the color band on the broom toidentify its product within the marketplace.204 The O'Cedar 2000brooms used a similar mark.205 Therefore, the companies were obvi-ously using similar marks as product identifiers.

An analogous situation of similarity between products can befound in Qualitex, in which Jacobson copied the green-gold padsused by Qualitex.206 These facts resemble the Libman case becausethe O'Cedar 2000 was introduced into the market after sales for theLibman 201 broom dramatically increased.207 But, unlike the situa-tion in Qualitex, Vining did not copy the color combination.208 Themarks used by Vining were similar, but not identical to those usedby Libman. However, similar marks can also cause consumer confu-sion. Consumers looking for a two-shade broom may not realize thatthe Libman 201 and the Vining broom both use a shade distinctionin the bristles.

This confusion is similar to the confusion cited by the SeventhCircuit in McGraw-Edison Co. v. Walt Disney Productions.209 Al-though the presentation was different, the confusion existed due tothe similar nature of the marks alone.210 Therefore, the duplicationof the two trademark identifiers created the confusion for the con-sumers. This logic can also be applied in the Libman case. Althoughthe two marks are not identical, enough similarity exists to createconfusion for the consumers in the market.211 Even though the two


69 F.3d 1360 (7th Cir. 1995), cert. denied, 116 S. Ct. 1878 (1996).212. See McGraw-Edison, 787 F.2d at 1169. In McGraw-Edison, the Seventh Circuit

looked at the two different lines of products under the TRON label. See id. McGraw-Edison manufactured high quality fuses where Disney manufactured and marketedentertainment-based products. See id.

213. Id. (quoting E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756F.2d 1525, 1530 (11th Cir. 1985)).

214. See generally RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. c (1995).215. See Libman, 876 F. Supp. at 188.216. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmts. g, l (1995).

companies used different colors in the two-toned brooms, the factthat both companies developed two-toned brooms created the simi-larity within the marks. Therefore, Libman could have argued thatsimilarity of the marks would be likely to cause consumer confusionwithin the marketplace.

The second factor the Seventh Circuit ignored, which could havestrengthened a claim for likelihood of confusion, is the similarity be-tween the products. In Libman, the products are identical. Bothcompanies manufacture brooms. However, the Seventh Circuit pre-viously held that although two companies manufactured vastly dif-ferent products, this factor was not dispositive in determining theissue of similarity of products.212 The Seventh Circuit defined theissue as “whether the products are the kind the public attributes toa single source.”213

Thus, when viewing the product, one must analyze whetherconsumers assume that one company could manufacture both prod-ucts. Since the brooms were nearly identical, with the sole differen-tiating factor being the color combination of the bristles, consumerscould readily assume the two products were produced by the samemanufacturer.214 Therefore, Libman could have argued that the twolines of brooms with differently shaded stripes on the bristles couldeasily have been construed as coming from one company. The dis-trict court in Libman also reinforced this assertion by stating thatconsumers are likely to be confused when the products are similarlydesigned.215 Thus, these two products would likely be attributed to asingle source instead of different manufacturers.

Additionally, consumers can become confused if the goods aremarketed within the same area and in the same manner.216 Anysubtle differences between the products could possibly becomeblended when the products are marketed within the same media.Both Libman and Vining target the same areas and use the same


217. See supra text accompanying note 33.218. 635 F. Supp. 600 (N.D. Ill. 1986).219. See id. at 608. However, in Source Services, both parties agreed that the marks

were advertised within the same media. See id.; see also Source Servs. Corp. v.Chicagoland Jobsource, Inc., 643 F. Supp. 1523, 1530 (N.D. Ill. 1986) (holding that themarketing to the audience must be similar for the court to find concurrent use of ad-vertising).

220. See Source Servs., 635 F. Supp. at 608.221. See Libman, 876 F. Supp. at 187.222. See id.223. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. g (1995). “If simi-

lar marks are used on goods sold through the same marketing channels, the probabilityof confusion may be higher than if the goods are marketed through separate channels.”Id.

224. Source Servs., 635 F. Supp. at 609 (quoting J. GILSON, TRADEMARK PROTECTION

AND PRACTICE § 5.08 (1985)). See supra notes 80–87 for definitions of the categories ofthe marks.

225. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. h (1995).226. See supra text accompanying notes 29–31.

channels of advertising.217 This marketing use resembles the disputewithin Source Services Corp. v. Source Telecomputing Corp.218 inwhich both companies advertised their service marks within thesame trade magazines.219 In that case, however, the court found nodispute over the concurrent use of the same marketing arena.220

This factor was not conceded in the Libman case, despite the factthat both companies mass marketed the brooms in the same dis-count retail chain stores and supermarkets.221 The products werealso advertised in women's magazines to the people who regularlyuse brooms and cleaning products.222 Thus, both companies obvi-ously target the same market and use similar advertising methods.Since concurrent marketing areas are used, consumers would likelybe confused over these similarly designed products.

Fourth, a likelihood of confusion is more probable when consum-ers exercise a low degree of care in selecting the product.223 When“the cost of the defendant's trademarked product is high, the courtsassume that purchasers are likely to be more discriminating thanthey might otherwise be.”224 Therefore, a less expensive product willnot produce the level of consumer scrutiny necessary for the con-sumer to find the specific product.225 Brooms are low-cost, impulsepurchases. Libman's president testified that the brooms are notitems which would likely cause a buyer to complain to the store thathe or she had purchased the wrong broom, and this assertion wasnever disputed by Vining during the trial.226 This factor supports the


227. See McGraw-Edison v. Walt Disney Prods., 787 F.2d 1163, 1170–71 (7th Cir.1986) (citing Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 n.2 (7th Cir.1965)). For the definitions of these categories, see supra notes 80–87 and accompanyingtext.

228. Sands, Taylor & Wood, Co. v. Quaker Oats Co., 978 F.2d 947, 959 (7th Cir.1992) (citing McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir. 1979)).

229. See supra notes 83–84 and accompanying text for a discussion of secondarymeaning.

230. For a description of how the courts view arbitrary marks, see supra note 87.231. See supra text accompanying notes 35–36. In the McGraw-Edison case,

McGraw-Edison marketed the TRON fuses in a variety of outlets which included “dis-count stores, hardware stores, and electrical supply and catalog houses.” 787 F.2d at1165. Disney marketed TRON merchandise in association with its motion picture entitledTRON. See id.


proposition that consumer confusion does exist among the productsbecause the degree of consumer care in selecting this product is low.

Fifth, Libman could have shown its mark is strong and distinc-tive within the market. In determining the strength of the mark, thecourt must determine into what category the mark falls: either sug-gestive, fanciful, or arbitrary, or has attained the necessary second-ary meaning to support a descriptive mark.227 The mark gainsstrength when consumers “identify the goods sold under the mark asemanating from a particular source.”228 As a common householditem — a broom — the Libman 201 must acquire distinctive mean-ing which allows the product to stand out in consumer's minds.229

Otherwise, the use of the two-toned bristles might be consideredfanciful or arbitrary230 since there is no practical use for multi-col-ored bristles on a broom. The use of the color pattern — whetherconsidered a distinctive or arbitrary mark — was designed to makethe Libman 201 stand out from other brooms in the retail market.231

Therefore, the Libman Company used the two-toned bristles in orderto establish a mark that would create distinctive meaning in com-parison to other brooms.

Libman 201 is advertised widely through traditional women'smagazines. This product, unlike the fuses in the McGraw-Edisoncase, is also marketed widely to the general public through retailstores and supermarkets.232 Therefore, the Libman 201 has greatervisibility within its overall market than the TRON fuse had in rela-tion to Disney's use of the TRON merchandise. However, Libmanshould have demonstrated the market visibility through a study orsurvey of the product's recognition in the market. This type of sur-


233. Id. at 188.234. Quaker Oats, 978 F.2d at 961 (quoting Forum Corp. v. Forum, Ltd., 903 F.2d

434, 439 (7th Cir. 1990)).235. See id. at 960–61.236. Id. at 963.237. See supra text accompanying notes 37–40.238. See Libman, 876 F. Supp. at 189. In the Quaker Oats case, the Seventh Circuit

stated “that the evidence of bad faith here is marginal at best.” Quaker Oats, 978 F.2dat 963. The district court in Libman found the evidence of bad faith from this case wasstronger than that presented in Quaker Oats. See Libman, 876 F. Supp. at 189.


vey would have solidified the recognition factor of the mark. Al-though Libman did not conduct a market study of the broom's abilityto be recognized, the company did present evidence that purchasersrequested this particular broom since consumers occasionally callLibman, asking “where they may purchase the broom they saw ad-vertised.”233 Libman's mark, therefore, should have been considereda strong base within the retail broom market, and Vining's nearlyidentical product should have been found to be an attempt to capi-talize on Libman's good will.

Finally, Libman needed to show that Vining's imitation of itsmark was undertaken in bad faith. Traditionally, when reviewingthe likelihood of consumer confusion, the plaintiff needed to demon-strate the infringing company's bad faith by showing the defendant“intended `to palm off his products as those of another' thereby prof-iting from the confusion.”234 Thus, the court must review the evi-dence to determine if the infringing party is profiting from the con-fusion between the marks. For example, in Sands, Taylor & WoodCo. v. Quaker Oats Co., the Seventh Circuit held that Quaker Oatsdid not use bad faith when the company failed to conduct a trade-mark search for Sands' “Thirst Aid” mark.235 Since Sands' mark wasbeing mistaken as Quaker Oats' mark, the court found that proof ofbad faith was “marginal at best.”236 In the Libman case, it was diffi-cult for Libman to show the existence of bad faith, since its only evi-dence was that Vining failed to check for any trademark infringe-ment.237 Nevertheless, the district court in Libman misinterpretedQuaker Oats when it stated that the lack of a trademark searchconstituted bad faith.238 However, the increasing market success ofthe Libman 201 indicates that Vining either knew, or should haveknown, of its competitor's popular two-color bristle broom when itdeveloped the O'Cedar 2000.239 Libman would probably need more


240. See generally 3 MCCARTHY, supra note 91, § 23.02(1). See the cases cited supranote 73.

241. See supra text accompanying notes 29–31 for a discussion of the recognition ofthe Libman mark.

242. See supra text accompanying notes 34–36.243. See generally Allen, supra note 5, at 20 (stating that “most courts agree that

actual confusion is one of the most important, if not the most important factor, consid-ered in determining the likelihood of confusion . . . ”).

244. See, e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.1992); McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163 (7th Cir. 1986).

245. Quaker Oats, 978 F.2d at 960 (citing International Kennel Club, Inc. v. MightyStar, Inc., 846 F.2d 1079, 1090 (7th Cir. 1988); see also Helene Curtis Indus., Inc. v.Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977); Tisch Hotels, Inc. v. Ameri-cana Inn, Inc., 350 F.2d 609, 611–13 (7th Cir. 1965)).

concrete evidence to show that Vining engaged in bad faith or pos-sessed actual intent to infringe upon Libman's broom.

Normally, courts have imposed liability when enforcing themark on low-priced goods and have utilized factors other than actualconfusion when determining the likelihood of confusion.240 AlthoughLibman should have conducted a consumer survey in order to deter-mine if any consumers experienced actual confusion, Libman didproduce evidence which showed that its mark was recognized byconsumers.241 Where no proof was given to show actual confusionexisted, Libman did show that its mark — the multi-colored bristles— was a distinctive identifier for the Libman 201.242 This, coupledwith the other factors such as a common market, common market-ing strategies, common product design, and common purchasers,should have supported Libman's prima facie case that a likelihood ofconfusion actually existed between the two products.

B. The Importance of Actual Confusion

In Libman, the Seventh Circuit disregarded all factors otherthan actual consumer confusion, and therefore, the mark wasdeemed not worthy of protection under the Lanham Trade-Mark Act.243 The court dramatically changed the test from a seven-factor test to a single-factor test. This switch runs contrary to Sev-enth Circuit precedent, as well as existing federal law.244

As recently as 1992, the Seventh Circuit stated “the plaintiffneed not show actual confusion in order to establish likelihood ofconfusion.”245 The Seventh Circuit previously found that if the publicthinks a product could be from the same source as a similar product,


246. See id. at 958–60.247. 906 F.2d 1202 (7th Cir. 1990).248. Id. at 1203. The Seventh Circuit reversed the district court's decision which

had failed to find trademark infringement because the plaintiff, Web Printing, did notshow proof of actual confusion. See id.

249. See, e.g., McGraw-Edison, 787 F.2d at 1168–73.250. See, e.g., Quaker Oats, 978 F.2d at 958–61.251. 15 U.S.C. § 1114(1)(a) (1994) (emphasis added).252. 3 MCCARTHY, supra note 91, § 23.02(1).253. See id. at 23–32.254. See Web Printing, 906 F.2d at 1203; see also AMF, Inc. v. Sleekcraft Boats, 599

F.2d 341, 353 (9th Cir. 1979); W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 662 (2dCir. 1970); David Sherman Corp. v. Heublein, Inc., 340 F.2d 377, 380–81 (8th Cir. 1965).

255. See 3 MCCARTHY, supra note 91, § 23.02(1), at 23–32.

the plaintiff can show infringement through the likelihood of con-sumer confusion, not just through actual confusion.246 This opinionwas bolstered through the Web Printing Controls Co. v. Oxy-DryCorp.247 decision, in which the Seventh Circuit held that “proof ofinjury caused by actual confusion is unnecessary.”248 Therefore, inprior cases involving proof of a likelihood of confusion, the SeventhCircuit focused upon other factors to determine whether theinfringement occurred.249 The court has also used all the factors indetermining that a given mark was not worthy of protection.250 TheSeventh Circuit, by focusing solely on the lack of actual confusion inthe Libman case, has shifted the “likelihood of confusion” test awayfrom precedent.

The prior Seventh Circuit decisions concur with the black letterlaw of the Lanham Trade-Mark Act, which states that “[a]ny personwho shall, without the consent of the registrant (a) use in commerceany . . . colorable imitation of a registered mark in connection withthe sale . . . [that] is likely to cause confusion . . . shall be liable in acivil action . . . .”251 The Lanham Trade-Mark Act never states thatthe plaintiff must show actual confusion in order to show a likeli-hood of confusion exists. “The plaintiff is not required to prove anyinstances of actual confusion.”252 This stipulation exists because it isoften difficult to collect reliable evidence of actual consumer confu-sion.253 Thus, the Seventh Circuit (and many other appellate courts)have held it reversible error to conclude that a plaintiff has failed toprove a violation under the Lanham Trade-Mark Act when theplaintiff does not show actual confusion.254 The plaintiff seeking in-junctive relief to protect a registered trademark needs only to provea likelihood of confusion.255


256. See supra text accompanying notes 164–69.257. Libman, 69 F.3d at 1363. The fact that the court recognized that the two-color

bristle pattern “jazzed up” the product is troubling. This statement seems to recognizethe fanciful or arbitrary nature of Libman's use of the multi-colored bristles to liven upthe broom.

258. See id.259. See generally id. at 1361.260. See id. at 1362–64.

Without formally changing the test through the Libman case,the Seventh Circuit has altered the test to one of actual confusioninstead of a likelihood of confusion. The court is altering its ownviewpoint in this area, as well as revising the Lanham Trade-MarkAct on the issue of likelihood of actual confusion for consumers.256

Despite the evidence presented of the mark's ability to be recog-nized, the court considered Libman's design only an attempt at“jazzing up the product” and not a distinctive identifier of the prod-uct.257 This factual decision, contrary to the district court's findings,was improper under the precepts of the Lanham Trade-Mark Act.Because Libman had no actual proof of consumer confusion, theSeventh Circuit's improper factual finding doomed Libman's case.

The Seventh Circuit did not recognize color as a valid identifierof this consumer product. The contrasting-color bristles on theLibman 201 broom were considered part of a “commonplace design”of the product as opposed to the product's identifier.258 Libman de-signed these contrasting-color bristles as a nonfunctional, fanciful,and distinctive trademark.259 But the Seventh Circuit, in its opinion,refused to recognize the validity of this trademark. Because Libmanlacked proof of actual confusion, it was unable to convince the courtof trademark infringement despite the fact that Vining appeared tohave adopted its two-colored broom after Libman gained great suc-cess with the Libman 201.260

V. CONCLUSION

The Seventh Circuit has created a confusing precedent inLibman Co. v. Vining Industries, Inc. By shifting the focus of thetest for likelihood of confusion from seven, equally-weighted factorsto one, solitary factor, the Seventh Circuit broke with the holdings ofthe other circuits as well as with its own prior cases dealing withthis issue. The Seventh Circuit, by focusing its attention only on thelack of actual consumer confusion, has apparently restructured the


focus of the test for likelihood of confusion. This shift in focus runscontrary to the language of the Lanham Trade-Mark Act as well asto its own prior cases.

The Seventh Circuit should return to using a multi-factored testto show a likelihood of confusion. This multi-factored test will allowthe district courts to examine many aspects of the mark and its al-legedly infringing competitor to determine the likelihood of con-sumer confusion. Under the Libman precedent, producers of com-mon household goods will experience great difficulty in attemptingto show actual confusion, especially since their products are mar-keted to impulse buyers. Because proof of actual confusion is diffi-cult to gather, demonstrating the likelihood of confusion will beextremely difficult. Thus, with only a few consumer complaints re-garding confusion about non-specialty items, these producers will behard-pressed to show the Seventh Circuit that trademark infringe-ment actually exists. Because little actual consumer confusion willexist, the manufacturers will only be able to show that their producthas been seemingly copied by the competition. While this might beenough to meet the multi-factored test for infringement of a mark, itwill not be sufficient to satisfy the incomplete test applied by theSeventh Circuit in Libman.

creating meaning within a gray area: redefining …...creating meaning within a gray area:...

Documents